Knock Off Designs Question

Author

Message

Lesia

Location : Texas

Subject: Knock Off Designs Question Thu May 28, 2009 4:45 pm

What happens when knock offs start popping up and the inventor is not on the patent??? If the inventor is not on the patent, do they loose the right to go after knock off's since the patent is no longer in there name???

Troy Robison

Location : Sunny, Florida

Subject: Re: Knock Off Designs Question Fri May 29, 2009 5:19 am

Lesia wrote:

What happens when knock offs start popping up and the inventor is not on the patent??? If the inventor is not on the patent, do they loose the right to go after knock off's since the patent is no longer in there name???

Lesia, I started to address this yesterday and my DSL went haywire....So here we go....

First of all why wouldnt the inventor not be listed on the patent ? Lets assume the inventor isnt on the patent. I will give you a simular scenerio..One day Laverne & Shirley were at the beach looking for shells. Shirley was digging in the sand and ran into a steel box. Both of them opened it and wow, it was full of cash, thousands of dollars... They both decide there not telling anyone about it and decide to keep the cash in Shirley's account so Laverne's boyfriend didnt find out....Six months later Laverne passes away.A week or two go by and Shirley starts thinking about the money in the bank, then it dawns on her shes not on Laverne's account. How am I going to get the money. She went to the bank talked to the president of the bank telling him where all the money came from in the first place and it was both of there money...President of the bank tells Shirley I'm sorry mam your not on the account so we cant just give you the money...nothing we can do.....

The above should answer your question about going after someone that has the so-called knockoff...Your names not on the patent so how could you....

Now what is a knockoff. Is the knockoff the exact same product you have ? Is your Patent a design or utility with claims ? If its a design it may not be a knockoff unless its a exact replica of your product, not color or shape of it. If your patent is utility your need to establish if the so-called knockoff has any of your patent claims used in it to establish if its a knockoff.

I assume you licenced your product to someone. The are assigned the Patent rights and own the IP. Is there anything in the agreement that says they will go after infringers in case of a knockoff ? Is there anything in the agreement stating you are the inventor but not listed on the USPTO patent documents ?

I think you get the point now. You should always be listed on the patent if you are the inventor,if anyone else was a co-inventor they need to be listed also. If you license you patent technology out as exclusive most of the time the company wants to be listed on the pat doc's as the assignee, but not in all cases. If the patent was Licensed as a non-exclusive and you had 5 different Licensed deals with different companys everything would be covered in your Licensing contract..

I understand why you asked the question. Your have to be using the scererio posted on the InventRight forum titled "Ethical Question".Someone did a ton of research asking questions on a certain company, no one can answer what up..It has me puzzeled also. The questions asked didnt accuse anyone of doing something wrong. They were just asking for clairification of how thing happened.

Lesia, I hope this helped you. Always have everything in writing in any document. Use a specialized Attorney when needed. Dont use a divorce attorney to help on a License deal.......

Here is another question for you. Can it be negotiated under a licensing agreement that the inventor retains the patent so they can personally go after the knock off's? I don't know how comfortable I would be putting that out of my control. I'd be willing to use my own money to pay for it (plus a world wide paptent, if possible). As the inventor, who has signed an exclusive licensing agreement, if I should see a knock-off while shopping at Target would I be able to send a certified letter to the manufacturer and tell them they were in violation of patent infringement ?? I'd like to keep my rights, is that possible to do ??

Troy Robison

Location : Sunny, Florida

Subject: Re: Knock Off Designs Question Fri May 29, 2009 12:34 pm

ali wrote:

Thank you Troy for this great information.

Here is another question for you. Can it be negotiated under a licensing agreement that the inventor retains the patent so they can personally go after the knock off's? I don't know how comfortable I would be putting that out of my control. I'd be willing to use my own money to pay for it (plus a world wide paptent, if possible). As the inventor, who has signed an exclusive licensing agreement, if I should see a knock-off while shopping at Target would I be able to send a certified letter to the manufacturer and tell them they were in violation of patent infringement ?? I'd like to keep my rights, is that possible to do ??

Ali it just depends on how the agreement is written..Yes you can go after someone infringing. Most of the time its in the contract who goes after infringers you or the company you licensed the technology to....Just remember lawsuits are expensive.

If you want that kind of control make sure it covered in the contract......